Automated Cell, Inc.

Trademark Trial and Appeal Board

Aug 6, 2002

No. 75864736 (T.T.A.B. Aug. 6, 2002)

Mailed: August 6, 2002
Paper No. 12
BAC

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Automated Cell, Inc.
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Serial No. 75/864,736
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Ansel M. Schwartz, Esq. for Automated Cell, Inc.

Brendan Regan, Trademark Examining Attorney, Law Office 113
(Odette Bonnet, Managing Attorney).
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Before Hanak, Chapman and Bucher, Administrative Trademark
Judges.

Opinion by Chapman, Administrative Trademark Judge:
On December 6, 1999, Automated Cell, Inc. (a
Pennsylvania corporation) filed an application to register
the mark AUTOMATED CELL on the Principal Register for
services amended to read “automated cell biology services,
namely analyzing living cells in regard to external
stimuli, for therapeutic development” in International
Class 42. The application is based on applicant’s claimed
THIS DISPOSITION IS
NOT CITABLE AS PRECEDENT
OF THE TTAB
Ser. No. 75/864736
2
date of first use and first use in commerce of March 19,
1997.
The Examining Attorney refused registration on the
ground that applicant’s mark, AUTOMATED CELL, is merely
descriptive of applicant’s automated cell biology services
under Section 2(e)(1) of the Trademark Act, 15 U.S.C.
§1052(e)(1).
When the refusal was made final, applicant appealed to
this Board. Both applicant and the Examining Attorney have
filed briefs; an oral hearing was not requested.
A mark is merely descriptive if it immediately
describes the ingredients, qualities or characteristics of
the goods or services with which it is used, or if it
conveys information regarding a function, purpose or use of
the goods or services. In re Abcor Development Corp., 588
F.2d 811, 200 USPQ 215, 217 (CCPA 1978); and In re Nett
Designs, 236 F.3d 1339, 57 USPQ2d 1564, 1566 (Fed. Cir.
2001). See also, In re Eden Foods Inc. 24 USPQ2d 1757
(TTAB 1992); and In re Bright-Crest, Ltd., 204 USPQ 591
(TTAB 1979). One must look at the mark in relation to the
goods or services, and not in the abstract, when
considering whether the mark is merely descriptive. See In
re Omaha National Corp., 819 F.2d 1117, 2 USPQ2d 1859 (Fed.
Cir. 1987); and Abcor, 200 USPQ at 218. It is well-settled
Ser. No. 75/864736
3
that, to be “merely descriptive,” a term need only describe
a single significant quality or feature of the goods. See
In re Gyulay, 820 F.2d 1216, 3 USPQ2d 1009, 1009 (Fed. Cir.
1987).
The Examining Attorney relies upon, inter alia,
applicant’s identification of goods “automated cell biology
services, namely analyzing living cells in regard to
external stimuli, for therapeutic development”1; applicant’s
specimen which states thereon “Cell Biology Tools and
Informatics”; and one page from applicant’s Web site which
includes the following statement:
“The CytoWorks platform measures these
functions through automated cell culture
coupled with real-time digital analysis
and automated manipulation of culture
conditions.”

The Examining Attorney submitted for the record (i)
copies of a few third-party registrations which include the
term “automated cell” within the identification of goods
and/or services [e.g., “reagents and chemicals for use in
automated cell and tissue staining...” (Reg. No.

1 While it is true, as applicant argues, that the Examining
Attorney found the original identification to be indefinite or
overbroad, and required a change to the identification, it is
important to note that applicant’s original identification of
services read “automated cell biology services for therapeutic
development.” It was not due to a requirement of the Examining
Attorney, but rather it was the applicant who originally
identified its services as “automated cell biology services....”
Ser. No. 75/864736
4
1,938,268), and “solid state, computerized instrument for
automated cell washing-decanting, addition of serum,
agitation and centrifugation” (Reg. No. 982,524)]; and (ii)
copies of several stories retrieved from the Nexis database
to show that the wording “automated cell” is commonplace
terminology in the field of biology, examples of which are
reproduced below (emphasis added):
Headline: 1998 Science Fair
Participants and Auxiliary Awards
First: Keith Bonawitz, “Automated cell
recognition using artificial neural
networks..., “Intelligencer Journal
(Lancaster, PA),” March 28, 1991; and

Headline: Baxter, VIMRX Subsidiary to
Market Cell Therapy Products
...In development is an automated cell
expansion platform that will enable
sterile growth for numerous cell types,
including stem cells, T-cells and
dendritic cells for therapeutic use....,
“Medical Industry Today,” February 26,
1998.

Applicant argues that the mark AUTOMATED CELL is not
merely descriptive as the term “cell” suggests a predefined
area and could refer to a cellular telephone system or a
prison cell; that the mark creates an ambiguity or
incongruity because there is no certainty “what cell is
being automated” (brief, p. 3); that a mental leap is
required for consumers to figure out what services are
involved; and that certain of the articles submitted by the
Ser. No. 75/864736
5
Examining Attorney could indicate that the company therein
is copying applicant’s mark.2
Upon careful consideration of this record and the
arguments of the attorneys, we conclude that the Examining
Attorney has satisfactorily demonstrated that the asserted
mark AUTOMATED CELL immediately describes a characteristic
or feature of the services with which applicant uses its
mark. The term immediately informs consumers that
applicant’s services are in the field of automated cell
biology. Moreover, the term does not create an incongruous
or creative or unique mark. Rather, applicant’s mark,
AUTOMATED CELL, when used in connection with applicant’s
identified services, immediately describes, without need of
conjecture or speculation, the nature of applicant’s
services, as discussed above. Nothing requires the
exercise of imagination or mental processing or gathering
of further information in order for purchasers of and
prospective customers for applicant’s services to readily

2 In addition, applicant argued for the first time in its brief
on appeal referencing a patent and arguing that applicant’s
services are “based on U.S. Patent No. 6,008,010 (a technique for
analyzing an individual cell over time)” (brief, p. 3). The
Examining Attorney objected to applicant’s reference to a patent
as untimely offered evidence, and if the objection was overruled,
the Examining Attorney alternatively offered photocopies of a few
pages from Patent No. 6,008,010. We agree with the Examining
Attorney that the reference to a patent for the first time in its
brief is untimely. Accordingly, pursuant to Trademark Rule
2.142(d), this argument by applicant has not been considered.
Ser. No. 75/864736
6
perceive the merely descriptive significance of the phrase
AUTOMATED CELL as it pertains to applicant’s services. See
In re Intelligent Instrumentation Inc., 40 USPQ2d 1792
(TTAB 1996); and In re Time Solutions, Inc., 33 USPQ2d 1156
(TTAB 1994).
Finally, we find that here the phrase unquestionably
projects a merely descriptive connotation, and we believe
that competitors have a competitive need to use this term.
See In re Tekdyne Inc., 33 USPQ2d 1949, 1953 (TTAB 1994),
and cases cited therein. See also, 2 J. Thomas McCarthy,
McCarthy on Trademarks and Unfair Competition, §11:18 (4th
ed. 2000).
Decision: The refusal to register on the ground that
the mark is merely descriptive under Section 2(e)(1) of the
Trademark Act is affirmed.